USPTO Patents Application 10759299

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/759,299

23373

01/20/2004

7590 01/26/2005

SUGHRUE MION, PLLC

2100 PENNSYLVANIA AVENUE, N.W.

SUITE 800

WASHINGTON, DC 20037

Takuo Sone

Q79484

7184

EXAMINER

EGWIM, KELECHI CHIDI

ART UNIT

PAPER NUMBER

1713

DATE MAILED: 01/26/2005

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

•

Office Action Summary

Application No.

10/759,299

Applicant(s) *

SONE ET AL

Examiner

Dr. Kelechi C. Egwim

Art Unit

1713

~ The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )S Responsive to communication(s) filed on 20 January 2004 .
2a)D This action is FINAL. 2b)S This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-15 and 18-20 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) E Claim(s) 1-15 and 18-20 is/are rejected.

7) ^ Claim(s) 9 is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10)Q The drawing(s) filed on is/are: a)Q accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)^ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)E3 All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2.03 Certified copies of the priority documents have been received in Application No. 09/033.685 .
3.Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) ^ Notice of References Cited (PTO-892)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
Paper No(s)/Mail Date 1.

4) O Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) C] Notice of Informal Patent Application (PTO-152)

6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 012005

Application/Control Number: 10/759,299 Page 2

Art Unit: 1713

DETAILED ACTION

Claim Objections

1 . Claim 9 is objected to because of the following informalities: The recitation
"wherein R 25 is a hydrocarbon group having a carbon number of 1-20, and n is an
integer of not less than 2" need not be in parentheses. The parenthesis should be
removed accordingly.

Claim Rejections - 35 USC §112

2. The following is a quotation of the second paragraph of 35 U.S.C. 112:

The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

3. Claims 1-15 and 18-20 are rejected under 35 U.S.C. 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which applicant regards as the invention.

4. Starting on the second line on page 8, claim 1 , from which the balance of the
claims depend, recites "I is an integer of 0-3" in reference to formulas (14), (15) and
(16). However, since neither of the formulas (14), (15) and (16) contains a variable "I" it
is unclear what variable applicant is attempting to define and therefore, what compound
applicant is attempting to encompass in the claims. Further, if the recitation "4-1" and
"2-1" in the formulas is supposed to be "4-I" and "2-I", with a definition of 0-3 for I, "2-1"
in formula (16) would encompass negative numbers, which is nonsensical. Also, it

Application/Control Number: 10/759,299 Page 3

Art Unit: 1713

appears that part of formula (1 6) is missing. It is not clear what compounds applicant is
attempting to claim.

5. In addition, while claim 9 recites formulas (19) and (20), no defining structure for
these formulas is recited in the claim.

Claim Rejections - 35 USC § 103

6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

7. Claims 1-15 and 18-20, claiming both the product and the process for producing
the product in this invention, are rejected under 35 U.S.C. 103(a) as being unpatentable
over Ikematsu et al. (JP 05059103 or JP 05051406) in combination with Tsujimoto et al.
(JP 8073515)

In the abstracts, Ikematsu et al. teach methods for producing conjugated diene
polymers comprising polymerizing a conjugated diene in the presence of a catalyst
system in an inert organic solvent and reacting the resulting polymer with a carboxylic
acid compound (I or j). Ikematsu et al. teach the catalyst system to comprise of a) a
lanthanum series (atomic number 57-71) rare earth metal compound, b) an
organoaluminum compound represented by AIR 1 R 2 R 3 (Formula 1 in claim 1), and c) a
halide compound.

Application/Control Number: 10/759,299 Page 4

Art Unit: 1713

Ikematsu et al. further teach for the presence of the catalyst system in the
polymerization to result in conjugated diene polymers produced with narrow molecular
weight distributions and high cis-1 ,4-bond contents.

Ikematsu et al. differ from the claimed invention in that, the catalyst is not
disclosed as comprising an aluminoxane. However, it is known in the art to add an
aluminoxane to a catalyst system comprising a) a lanthanum series rare earth metal
compound, b) an organoaluminum and c) a halide compound for polymerizing
conjugated dienes;for the purpose of obtaining narrow molecular weight
distributions and higher cis-1 ,4-bond contents, such as taught by Tsujimoto et al.
(See U 25 in Full translation of Tsujimoto et al.)

In U 6-7, Tsujimoto et al. teach a conjugated diene polymerized in the presence
of a catalyst system, said catalyst system comprising a) a lanthanum series (preferably
atomic number 57-64) rare earth metal compound, b) an organoaluminum compound
represented by AIR 1 R 2 R 3 (Formula 1 in claim 1), c) a halide compound and an
aluminoxane. See 15-18 in Tsujimoto et al.

In U 23, Tsujimoto et al. further teach the metal compound to be used in an
amount of 0.0001-1.0 mmol per 100g of the conjugated diene compound. Tsujimoto et
al. also teaches the catalyst to have such a composition ratio that the molar ratio of the
metal compound to the halide compound is 1 :0.1-1 :15, the molar ratio of the metal
compound to the aluminoxane is 1:10-1 :5000, the molar ratio of the metal compound to
the organoaluminum compound is 1:1-1 :5000, the molar ratio of the aluminoxane to the
organoaluminum compound is 1:0.01-1:100.

Application/Control Number: 10/759,299

Page 5

Art Unit: 1713

In tables 1 , 2 and 6, Tsujimoto et al. show the resulting polymer after
polymerization with the catalyst to have Mw/Mn ratios of 3.5 or less.

Therefore, it would have been obvious to one having ordinary skill in the art at
the time the invention was made, to include aluminoxane in the catalyst system of
Ikematsu et al., in order to obtain the advantages taught by Tsujimoto et al. motivated
by a reasonable expectation of success.

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Dr. Kelechi C. Egwim whose telephone number is (571)
272-1099. The examiner can normally be reached on M-T (7:30-6:00).

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, David Wu can be reached on (571) 272-1 114. The fax phone number for
the organization where this application or proceeding is assigned is 703-872-9306.

Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).